Policy IPIssuesWhenPILeaves
Policy IPIssuesWhenPILeaves
Policy IPIssuesWhenPILeaves
AND
RELATED RIGHTS
What Goes Out the Door
When a Researcher Does?
University of Rochester
Office of Technology
Transfer
Presented by
Gail Norris
1
What We Need to Think About –
IP and Related Rights
Patents
Research Materials (MTAs)
Copyrights
Grants and other external research awards
Research Data
Research Animals or Equipment
Personnel
2
Questions We’ll Answer
When a researcher leaves, what can he or
she take?
What needs to stay at the University?
Once we know the answers to these
questions, what do we need to do to ensure
that the right property/assets reside in the
right place?
We’ll end with a checklist you can use to help
you through these issues when the situation
arises
3
Is this Really Necessary??
Academic institution and researchers are
collaborative – are there really disputes that
arise in this area?
4
Intellectual Property Covered by a
Patent Application or Issued Patent
University owns and inventor gets % of
royalties – even if he leaves
If an inventor leaves – he (and his new
employer) needs to make sure that he has
necessary rights to use the patent if still
needed in his research
For patents that are in prosecution and not
yet issued – we need to ensure that inventor
will be available to cooperate in continued
prosecution (good incentive with royalty
sharing)
5
Inventions that are Partially
Developed at Both Institutions
This is common because of fluid, on-going
nature of research
To unravel the issues – important to have
some idea of status of the researcher’s work
at the time of the job change
Bayh Dole requires correct ownership if
inventive work was done with federal funds
Inter-institutional Agreements are the solution
to joint patent ownership
6
Research Material
RM that was developed here should be
moved to the new place under an MTA
If researcher was working here with material
received under an MTA we need to make
sure the new employer negotiates a new MTA
for the material. Can’t use ours (maybe can
assign ours but need to pay attention to terms
and intended use)
Involve new employer’s MTA staff asap.
7
Copyrighted Material and
Works of Authorship
General Rule – Work for Hire
Textbook exception
Creates some ambiguity with advent of new
technology tools
Web based software or other computer software
Audio, visual or written works of authorship used
in course curriculum
Teaching modules, resource or other training
manuals, etc., etc.
8
External Research Awards
Government Grants and Industry Sponsored
Research Agreements
University personnel should talk with the PI who is
leaving to discuss status of project
Will the work stay or go with the researcher?
Mutual agreement on what is needed to finish and
who will do it. Involve research office of new
employer asap.
Consultation with Sponsor and review of terms of
agreement necessary
9
Research Data
Most researchers hold onto their research
data like it was their baby
Data is typically in lab notebook or on PCs
OMB Circular A-110 specifies that financial
records, supporting docs, and all other
records pertinent to a federally funded award
shall be retained by the institution
That means we need to make sure we have
access to the research data (probably true
with all sponsored research) . . .
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Research Data - Access
We can keep a copy of the data – probably
necessary for financial records and reports
submitted to sponsor
We can allow researcher to take data but
make it available to us as needed
Record-retention period specified
11
Research Animals and
Equipment
If Animals will move – may need University
Committee on Animal Research (UCAR)
approval
Some University policies require quarantine
of animals before being accepted into their
facilities
Transfer of equipment depends on funds
used to purchase it and purpose of
equipment
If Fed agency funds – check agency regs and
docs
If University or Industry sponsor funds – should
stay here as general rule
12
Personnel
In some cases, we need to prepare for
the possibility that the researcher may
take personnel with him (now or in near
future) and anticipate the staffing issues
that might create for your department
13
Reverse Engineer if a New
Researcher is Coming Here
Check IP terms to make sure researcher has
right to use any copyrights or patents owned
by former employer
Check documentation for any research
materials brought to the University
Check documentation and ascertain grants or
other research awards that are being
transferred to University
Understand status of any transferred grants
or awards to make sure $ and work are
properly allocated between the two
institutions – complicated – stay tuned
14
Best Practices – Exit Interview
(Entrance Interview)
Is the Researcher intending to use any patented,
patent-pending or copyrighted works after he leaves?
If so, contact OTT
Is the Researcher taking any research material (cell
lines, mice, cell/tissue cultures, antibodies, etc.). If
so, contact ORPA. ORPA will contact new employer
Is the Researcher the PI on any external grants. If
so, you need to understand what the status is of the
project ($ and work) and who will complete – Contact
ORPA. ORPA will contact new employer
Talk through the issue of research data – especially
related to the researcher’s federal grants and make
sure we have access to it – ORPA can help
If applicable, consider issues of animal research,
equipment and potential personnel loss
15
This presentation will be available on
the ORPA website so you can access it
to get the Exit Interview slide when you
need it
QUESTIONS?
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